UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 5/21/2015

 

TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.

 

INTRODUCTION

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES

 

Applicant must address:

 

• Section 2(d) Partial Refusal – Likelihood of Confusion;
• Mark Description and Literal Mark Element Amendment Required;
• Identification of Goods Amendment Required;
• Clarification of the Number of Classes for Which Registration Is Sought Required;
• Disclaimer Required; and
• Additional Information Required.

 

SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is partially refused as to the goods in Classes 18 and 25 because of a likelihood of confusion with the marks in U.S. Registration Nos. 2724405 and 3755618.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Here, the applicant's mark is LOST CREEK FISHING GEAR AND ACCESSORIES for wading staffs and lumber packs in Class 18 and fishing clothing in Class 25, and the registrant's marks, owned by the same entity, are LOST CREEK (U.S. Registration No. 2724405) and LC LOST CREEK OUTFITTERS (U.S. Registration No. 3755618) for unisex casual clothing.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant: similarity of the marks, goods that are similar in nature, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

Here, the applicant's design mark LOST CREEK FISHING GEAR AND ACCESSORIES is confusingly similar to the registrant's typed mark LOST CREEK (U.S. Registration No. 2724405) and design mark LC LOST CREEK OUTFITTERS (U.S. Registration No. 3755618). 

 

The applicant's mark and the mark in U.S. Registration No. 2724405 mark begin with the same inherently distinctive wording LOST CREEK, which is identical in appearance, sound, and commercial impression, namely, evoking "a small stream" that is "unable to be found."  http://www.merriam-webster.com/dictionary/creek (defining creek); http://www.merriam-webster.com/dictionary/lost (defining lost).  Consumers are generally more inclined to focus on the first word in any trademark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).  Because LOST CREEK is the first wording in the marks, consumers will focus on it for source identification, thereby making it the dominant feature of the marks.  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.

 

Additionally, the applicant's mark and the mark in U.S. Registration No. 3755618 contain the same inherently distinctive wording LOST CREEK, which, as stated above, is identical in appearance, sound, and commercial impression. 

 

Moreover, the applicant incorporates into its mark the entirety of the mark in U.S. Registration No. 2724405.  However, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); Hunter Indus., Inc. v. Toro Co., 110 USPQ2D 1651, 1660-61 (TTAB 2014) (finding PRECISION and PRECISION DISTRIBUTION CONTROL confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Furthermore, the applicant's mark also includes the wording FISHING GEAR AND ACCESSORIES, and the mark in U.S. Registration No. 3755618 contains the additional wording OUTFITTERS.  However, these additions, too, are insufficient to obviate the similarities between the marks.  Specifically, OUTFITTERS, which was disclaimed, refers to the fact that the registrant is "a business that provides equipment, supplies, and often trained guides for activities such as hunting, hiking, etc."  http://www.merriam-webster.com/dictionary/outfitter (defining outfitter).  Similarly, FISHING GEAR AND ACCESSORIES, which must be disclaimed for the reasons set forth below, refers to that which the applicant offers under its mark, namely, a variety of fishing equipment.  Disclaimed matter and matter that is generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).  Thus, this wording is less significant in terms of affecting the marks' commercial impressions, and the wording LOST CREEK remains the dominant element of the marks.

 

Also, the applicant's mark includes the design of a stylized river, and the mark in U.S. Registration No. 3755618 contains the design of boot prints.  However, these additions as well are insufficient to obviate the similarities between the marks.  Specifically, these designs do not otherwise alter the commercial impressions of the marks, and they are not so distinctive that consumers are likely to call for the parties' goods by referencing the designs.  For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)).  Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Thus, the wording LOST CREEK remains the dominant element of the marks.

 

Finally, though the mark in U.S. Registration No. 3755618 begins with the lettering LC, this, too, is insufficient to obviate the similarities between the marks.  Specifically, these letters merely serve as an acronym for the wording LOST CREEK, thereby informing the consumer as to what LC stands for.  Because consumers are likely to be familiar with the registrant's earlier LOST CREEK brand, see U.S. Registration No. 2724405, upon viewing or hearing LC LOST CREEK OUTFITTERS in commerce, they are likely to call for the registrant's goods by referencing the wording that they are most familiar with, namely, LOST CREEK, as opposed to using the new acronym LC.

 

For these reasons, when consumers encounter the parties' goods using marks with these similarities, they are likely to be confused as to the source of the goods.  Therefore, the marks are confusingly similar.

 

Relatedness of the Goods

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Here, the applicant's wading staffs and lumber packs in Class 18 and fishing clothing in Class 25 are closely related to the registrant's unisex casual clothing.

 

Neither the application nor the registrations contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold everywhere that is normal for such items, i.e., clothing and department stores.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

In this case, in particular, the applicant specifies the purpose of its clothing by indicating that it is for fishing.  However, this limitation does not preclude the fact that the registrant's unisex casual clothing may encompass the applicant's fishing clothing.  For example, "casual" is defined as a "dress code that emphasizes comfort and personal expression over presentation, formality and conformity."  http://en.wikipedia.org/wiki/Casual (defining "casual").  In light of this definition, the applicant's clothing could very well emphasize comfort and personal expression over presentation, formality, and conformity while fishing.  Notwithstanding, and to the extent the applicant disagrees, the attached evidence clearly establishes that third parties frequently manufacture, market, and sell fishing and casual clothing together under the same mark.  See, e.g., http://www.columbia.com/fishing-clothing-accessories/ and http://www.columbia.com/activity-travel-casual-clothing/ (offering a variety of fishing and casual clothing under Columbia mark); http://www.underarmour.com/en-us/sports/fishing and http://www.footlocker.com/Under-Armour/_-_/N-10q/keyword-mens+casual+clothing (same under Under Armour mark); http://www.patagonia.com/us/shop/mens-fly-fishing?k=1D-3g and http://www.patagonia.com/us/shop/web-specials-lifestyle?k=aR-ga (offering a variety of flying fishing clothing and casual clothing under Patagonia mark).  Additionally, the attached evidence also shows that the applicant's wading staffs and lumbar packs are routinely sold in the same specialty trade channels as the registrant's casual clothing.  See, e.g., http://www.cabelas.com/catalog/search.cmd?form_state=searchForm&N=0&fsch=true&Ntk=AllProducts&Ntt=wading+staff&x=10&y=6&WTz_l=Header%3BSearch-All+Products, http://www.cabelas.com/catalog/search.cmd?form_state=searchForm&N=0&fsch=true&Ntk=AllProducts&Ntt=lumbar+pack&x=10&y=6&WTz_l=Header%3BSearch-All+Products, and http://www.cabelas.com/catalog/browse/_/N-1100830 (offering wading staffs, lumbar packs, and casual clothing through Cabela's mark); http://www.basspro.com/webapp/wcs/stores/servlet/Navigation?storeId=10151&catalogId=10051&langId=-1&searchTerm=wading+staff, http://www.basspro.com/webapp/wcs/stores/servlet/Navigation?storeId=10151&catalogId=10051&langId=-1&searchTerm=lumbar+pack, and http://www.basspro.com/webapp/wcs/stores/servlet/Navigation?storeId=10151&catalogId=10051&langId=-1&searchTerm=casual (same through Bass Pro Shops mark); http://www.llbean.com/llb/shop/36466?page=folstaf-wading-staff, http://www.llbean.com/llb/search/?freeText=lumbar+pack&init=1&sort_field=Relevance, and http://www.llbean.com/llb/search/?freeText=casual&init=1&sort_field=Relevance (same through L.L.Bean mark).  The undersigned attorney also has attached evidence from the Office's database of marks consisting of eight third-party marks registered for use in connection with the same or similar goods as those of the applicant and registrant.  See U.S. Registration Nos. 4380711, 4566208, 4576990, 3034300, 3864943, 3994715, 4049519, and 3072615.  This evidence further shows that the goods identified therein are of a kind that may emanate from the same source under a single mark.  See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

Collectively, this evidence demonstrates that the parties' goods are closely related because they are similar in nature and routinely travel in the same trade channels under the same mark.  Accordingly, consumers are accustomed to seeing these goods together in the marketplace and, therefore, may confuse the source thereof when viewing or hearing LOST CREEK FISHING GEAR AND ACCESSORIES, LOST CREEK, and LC LOST CREEK OUTFITTERS.

 

Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods.  Thus, registration is partially refused pursuant to Trademark Act Section 2(d). 

 

Response to Partial Refusal

 

The stated partial refusal only refers to the goods in Classes 18 and 25.

 

Applicant may respond to the stated partial refusal by submitting evidence and arguments against the partial refusal.  In addition, applicant may respond by doing one of the following:

 

(1)            Deleting the goods to which the partial refusal pertains; or

 

(2)       Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the partial refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the partial refusal.  37 C.F.R. §2.87(e).

 

REQUIREMENTS

 

If the applicant responds to the partial refusal, then the applicant also must respond to the below requirements.

 

MARK DESCRIPTION AND LITERAL MARK ELEMENT AMENDMENT REQUIRED

 

The description of the mark is inaccurate because the applicant states that the literal element of the mark is LOST CREEK FISHING GEAR AND ACCESSORIES, when it fact, in light of U.S. Serial No. 86529008 (attached), it appears to be LC LOST CREEK FISHING GEAR AND ACCESSORIES.  Additionally, the description of the mark is incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d). 

 

Therefore, applicant must provide a more accurate and complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the lettering "LC", with the "L" above the "C", in the shape of a stylized river.  To the right of this wording is the wording "LOST CREEK", beneath which, in smaller font, is the wording "FISHING GEAR AND ACCESSORIES".

 

Additionally, the applicant must change the literal mark element of the application to: LC LOST CREEK FISHING GEAR AND ACCESSORIES. 

 

NOTE:  To the extent the applicant effectuates this change, the argument presented in the above similarities of the mark section will change. 

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED

 

Class 8

 

The wording “cutters” in the identification of goods is indefinite and must be clarified because the applicant must specify the type of cutters it offers in Class 8.  See TMEP §1402.01.

 

Class 12

 

The wording "boat covers, boat motor covers, … downrigger covers" in the identification of goods must be clarified because it is indefinite, too broad, and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, the applicant must specify whether its covers are fitted (Class 12) or unfitted (Class 22). 

 

The wording "sleds for ice fishing" in the identification of goods must be clarified because it is indefinite, too broad, and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, the applicant must specify whether its sleds are for rescue purposes (Class 9), transport purposes (Class 12), or for recreational use (Class 28).

 

The wording "auger bags" in the identification of goods must be clarified because it is indefinite, too broad, and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, not only must the applicant specify the type of auger its bags are used for but also the applicant must specify whether its bags are specially adapted for holding and carrying power augers in Class 7 or hand powered augers in Class 8.  If neither suggestion is appropriate, then the applicant must clarify and reclassify accordingly. 

 

Applicant has classified “tables and chairs for use in ice fishing tents” in International Class 12; however, the proper classification is International Class 20.  Therefore, applicant may respond by (1) adding International Class 20 to the application and reclassifying these goods in the proper international class, (2) deleting “tables and chairs for use in ice fishing tents” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Class 22

 

The wording “boat straps” in the identification of goods must be clarified because it is indefinite, too broad, and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, the applicant must specify the material composition of the straps, and the material composition thereof determines classification.  For example, metal straps belong in Class 6, whereas synthetic straps are classified in Class 22.

 

Class 25

 

Applicant has classified “hat clips” in International Class 25; however, the proper classification is International Class 26.  Therefore, applicant may respond by (1) adding International Class 26 to the application and reclassifying these goods in the proper international class, (2) deleting “hat clips” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant has classified “chest packs” in International Class 25; however, the proper classification is International Class 18. 

 

The wording "bibs" in the identification of goods must be clarified because it is indefinite, too broad, and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, the applicant must specify the material composition of the bibs, and the material composition thereof determines classification.  For example, paper bibs belong in Class 16, whereas non-paper bibs as an article of clothing are classified in Class 25.

 

Class 28

 

Applicant has classified “anchors” in International Class 28; however, the proper classification is International Class 6.  Therefore, applicant may respond by (1) adding International Class 6 to the application and reclassifying these goods in the proper international class, (2) deleting “anchors” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Applicant has classified “ice skimmers” in International Class 28; however, the proper classification is International Class 8. 

 

Applicant has classified “fish finders” in International Class 28; however, the proper classification is International Class 9. 

 

The wording "crab traps" in the identification of goods must be clarified because it is indefinite, too broad, and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  Specifically, the applicant must specify the material composition of the traps, and the material composition thereof determines classification.  For example, metal traps belong in Class 6, whereas non-metal traps are classified in Class 20.

 

Therefore, the applicant may adopt the following identification of goods, if accurate:

 

Class 6: "{specify material composition of straps in Class 6, e.g., all-purpose metal boat straps, etc.}; anchors; metal crab traps."

 

Class 7: "Power ice augers used for ice fishing; bags specially adapted for holding and carrying {specify type of augers in Class 7, e.g., power ice augers used for ice fishing, etc.}."

 

Class 8: "Hand tools for use in tying artificial fishing flies, namely, {specify type of cutters in Class 8, e.g., fishing line, etc.} cutters, pliers; fishing knives; hand-powered ice augers used for ice fishing; bags specially adapted for holding and carrying {specify type of augers in Class 8, e.g., hand-powered ice augers used for ice fishing, etc.}; ice skimmers."

 

Class 9: "Pre-recorded DVDs featuring fishing, radios, radio antennas, carrying cases for radios; fish weighing scales; underwater cameras; batteries and battery chargers for boat motors; rescue sleds for ice fishing; fish finders."

 

Class 12: "Boats; fitted boat covers, fitted boat motor covers, boat fenders, fitted downrigger covers, sleds for ice fishing for transport purposes."

 

Class 16: "Fishing maps; books featuring fishing; decals, stickers, pictures; bibs of paper."

 

Class 18: "Wading staffs, lumbar packs; chest packs."

 

Class 20: "Tables and chairs for use in ice fishing tents; non-metal crab traps."

 

Class 22: "Ice fishing tents, {specify material composition of straps in Class 22, e.g., all-purpose boat straps comprised of synthetic textile materials, etc.}; unfitted boat covers; unfitted boat motor covers; unfitted downrigger covers."

 

Class 25: "Clothing for fishing, namely, socks, waders, booties, vests, hats, shoes, shirts, hooded sweatshirts, jackets, coats, rain wear, bibs in the nature of {specify type of bibs in Class 25, e.g., bib overalls, etc.}, gloves."

 

Class 26: "Hat clips."

 

Class 28: "Fishing equipment, namely, rods, downrigger rods, reels, sinkers, bobbers, tippets, lures, lure wraps, floatants, fly line backing, leaders, fishing line, fishing flies, terminal tackle, terminal rigs, artificial fishing bait, ice fishing rod holders, stringers; fishing rod cases, fishing reel cases, grips for fishing reels, fishing rod racks, fishing fly boxes, fishing tackle boxes, fishing tackle bags; inflatable hammocks for recreational use in water, ice fishing strike indicator; inflatable float tubes for fishing; clam guns; sleds for ice fishing for recreational use."

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR

WHICH REGISTRATION IS SOUGHT REQUIRED

 

The applicant has identified goods that could be classified in at least twelve classes.  However, the applicant submitted a fee sufficient for only nine classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). 

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The fees for adding classes to an application are $325 per class when the fee is paid using the Trademark Electronic Application System (TEAS) and $375 per class when the fee is paid in a paper submission.  See 37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the following unregistrable components of the mark:  (1) the wording “FISHING GEAR AND ACCESSORIES” because it merely describes a feature of applicant’s goods; and (2) the wording “LOST CREEK” because it is primarily geographically descriptive of the origin of applicant’s goods.  See 15 U.S.C. §§1052(e)(1)-(2), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a). 

 

Here, "FISHING GEAR" is defined as "gear used in fishing," http://www.thefreedictionary.com/fishing+gear, and "ACCESSORIES" is defined as "something[s] added to something else to make it more … effective," http://www.merriam-webster.com/dictionary/accessory.  In light of these definitions, "FISHING GEAR AND ACCESSORIES" immediately conveys and merely describes a feature of the applicant's goods, namely, they are gear used in fishing and they also add to fishing to make it more effective.  Additionally, the attached evidence clearly establishes that third parties routinely use this wording to describe a feature of the same or similar goods.  See, e.g., http://www.walmart.com/c/bg/fishing-gear-buying-guide ("Using the right fishing gear and accessories makes all the difference while enjoying time out on the water."); http://www.grandslamtackle.com/fishing-accessories/ ("Explore a wide variety of Off Shore fishing gear and accessories").  Thus, this wording must be disclaimed.

 

Additionally, "LOST CREEK" is a generally known geographic place or location.  See TMEP §§1210.02 et seq.  Specifically, the attached excerpt from the Utah Travel Industry Website shows that Lost Creek "is a 365-surface-acre reservoir popular for fishing" "[l]ocated in the mountains of northern Utah."  http://www.utah.com/stateparks/lost_creek.htm.  Additionally, Lost Creek is touted as "a popular winter ice fishing reservoir."  Id.  The goods for which applicant seeks registration originate near this geographic place or location as shown by the applicant's address, which is located approximately 71.7 miles away (or an hour-and-forty-two-minute drive) from the Lost Creek Reservoir.  http://www.google.com/maps/dir/Midvale,+UT/Lost+Creek+Reservoir,+Morgan+County,+UT/@40.9012326,-111.9507633,10z/data=!3m1!4b1!4m14!4m13!1m5!1m1!1s0x87526057e7f7333f:0x30e81959795caae6!2m2!1d-111.8999353!2d40.6110589!1m5!1m1!1s0x8753cb8b3cfccce9:0x62dcce473206cd14!2m2!1d-111.3933073!2d41.1917076!3e0.  Purchasers are likely to believe the goods originate in this geographic place or location because the applicant has a commercial establishment near there.  See TMEP §§1210.04 et seq.  Thus, this wording, too, must be disclaimed.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods, including the geographic origin thereof, in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “LOST CREEK FISHING GEAR AND ACCESSORIES” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

ADDITIONAL INFORMATION REQUIRED

 

To permit proper examination of the application, applicant must submit additional information about the goods.  See 37 C.F.R. §2.61(b); In re AOP LLC, 107 USPQ2d 1644, 1650-51 (TTAB 2013); In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); TMEP §§814, 1402.01(e).  Specifically, applicant must submit the following:

 

1. Will the applicant's goods be manufactured, packaged, shipped from, come from, sold in or have any other connection with Lost Creek, Utah?

 

Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade.  Conclusory statements will not satisfy this requirement for information.

 

Failure to comply with a request for information can be grounds for refusing registration.  In re AOP LLC, 107 USPQ2d at 1651; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d at 1457-58.

 

RESPONSE GUIDELINES

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the partial refusal and requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 5/21/2015 FOR U.S. APPLICATION SERIAL NO. 86529017

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 5/21/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.